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Patent
Taiwan Intellectual Property Office to Refund for Patent Application Not Acted On Within Statutory Time Limit
The Taiwan Intellectual Property Office (TIPO), in accordance with the provisions of the Administrative Procedural Act, amended and announced the Time Limits for Acting on Patent-Related Matters on May 9, 2004. However, recently, the backlog of cases cannot be solved given the shortage in the examination manpower of TIPO. In addition, given the worldwide financial crisis and streamlining of the cost of the enterprises, TIPO has recently announced that, in accordance with Article 19 of the Charges and Fees Act, the patent applicants may request for “termination of patent prosecution” for cases that have not been acted on by the TIPO within the time limits as specified and to refund the charges and fees previously paid. This hence will help reduce the quantity of the backlog of cases, while encouraging enterprises to terminate unnecessary patent applications and to alleviate their financial pressure at the same time.
In accordance with the provisions of Article 19(1) of the Charges and Fees Act: for the matters under Article 7 and Article 8 that the fees-paying obligors apply for, in the event that the organizations and schools in charge cannot act on the matters within the time limits as specified, the fees-paying obligors may request for termination, and the organizations and schools in charge shall refund the charges and fees previously paid while terminating the matters. However, the charges and fees shall not be refunded for reasons attributable to the fees-paying obligors.
Therefore, in the event that patent-related matters are not acted on by the TIPO within the statutory time limits as specified, the applicants may request TIPO on their own initiative for termination and for refunding the charges and fees previously paid. The time limits for acting on patent-related matters are outlined as follows (sourced from the website of TIPO):
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Serial No.
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Types of the Issues
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Time Limit for Actions
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1
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Preliminary examination of an invention application (upon request for substantive examination)
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18 months
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2
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Early publication of the invention
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8 months
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3
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Priority examination of the invention application
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10 months
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4
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Re-examination of electric engine and chemical cases
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15 months
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5
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Re-examination of machinery and daily commodities cases
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12 months
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6
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Request for compulsory licensing of an invention patent
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24 months
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7
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Abolishment of the compulsory licensing of an invention patent
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18 months
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8
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Appraisal of compensation for compulsory licensing of an invention patent
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6 months
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9
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Patent term extension of an invention patent
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12 months
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10
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Application for a utility model patent
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6 months
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11
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Issuance of Technical Evaluation Report for a utility model patent
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12 months
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12
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Issuance of Technical Evaluation Report for a utility model patent with prioritized causes
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6 months
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13
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Preliminary examination of a design application
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12 months
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14
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Preliminary examination of an associated design application
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16 months
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15
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Re-examination of a design application
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12 months
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16
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Re-examination of an associated design application
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16 months
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17
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Examination of an opposition action
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10 months
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18
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Examination of an invalidation action
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12 months
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19
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Examination of an invalidation action with prioritized causes
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6 months
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20
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Corrections to a issued patent
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6 months
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The above time limits for acting on the matters are calculated from the receipt of the application. However, the periods for notifying the applicants to submit supplements and amendments, and for suspension due to other reasonable causes need not be accounted for.
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